Western Minerals Technology Pty Ltd v Western Mining Corporation Limited

[2001] APO 36

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No.663525 in the name of WESTERN MINERALS TECHNOLOGY PTY LTD

Title:          ACTIVATION OF A MINERAL SPECIES

Action: Opposition under section 59 of the Patents Act 1990 by WESTERN MINING CORPORATION LIMITED and in the matter of costs thereof

Decision:          Issued            .

Abstract

The following matters were raised relating to the award of costs:

·    Reduction in the number of citations finally pursued at the substantive hearing

·    Only one of the opponent's declarants in evidence in support was determined to be a skilled person in Australia

·    The opponent failed on 3 of the 5 grounds relied upon in the opposition

· The applicant had a reasonable expectation that the single document on the basis of which the opponent was successful would be excluded from consideration under the provisions of s24(1) of the Patents Act

·    The hearing officer decided that all claims of the specification lack novelty and inventive step and has refused the application on the basis that there is no patentable subject matter in the specification

After due consideration of all relevant circumstances relating to the award of costs, the

delegate determined that costs should follow the event.  The delegate noted that 'The

opponent has been successful on two major grounds and I had determined that "there is no

patentable subject matter in the specification".'

Costs awarded in accordance with Schedule 8 against the applicant Western Minerals

Technology Pty Ltd and in favour of the opponent Western Mining Corporation Limited.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 663525 by WESTERN MINERALS TECHNOLOGY PTY LTD and opposition under section 59 of the Patents Act 1990 by WESTERN MINING CORPORATION LIMITED and in the matter of costs thereof.

BACKGROUND

Dominion Mining Limited, now Western Minerals Technology Pty Ltd (WMT) filed patent application 27182/92 on 20 October 1992 associated with Australian Provisional Patent applications PK9121 and PL3016 filed 25 October 1991 and 17 June 1992 respectively.  The application was advertised as accepted on 12 October 1995 under the No. 663525.

Subsequently four parties filed notices of opposition of which one was dismissed and two subsequently withdrew their oppositions.  The only remaining opponent was Western Mining Corporation Limited (WMCL) which opposed the grant of a patent on the application on 12 January 1996.

WMCL filed a statement of grounds and particulars on 12 April 1996 and completed filing of evidence in support on 12 July 1996. WMT completed filing of evidence in answer on 30 June 1997. During the opposition process WMT requested leave to amend the specification of patent application 663525 on 10 April 1997. This was finally allowed by a decision of the delegate of the Commissioner dated 21 September 2000 ([2000] APO 59). Filing of evidence in reply was completed by WMCL on 20 December 2000.

The hearing was held in Canberra on 19 April 2001.  Bruce Caine of counsel and Peter Caporn, patent attorney of Wray & Associates, Perth, represented the applicant (WMT).  Also present on behalf of the applicant was Gary Johnson.  David Catterns, senior counsel, David Clark, patent attorney and Andreas Hartmann (observer) of Griffith Hack, Sydney, represented the opponent (WMCL).

The decision in this matter was issued on 12 July 2001 ([2001] APO 32). In that decision the matter of costs had not been finally decided, and I had directed that the applicant and the opponent file their submissions on costs, with the Office, within two weeks of the date of issue of the decision. The applicant filed their submissions on 25 July 2001 and the opponent filed their submissions on 26 July 2001.

SUBMISSIONS

The opponent submitted as follows:

"The hearing officer decided that all claims of the specification lack novelty and inventive step and has refused the application on the basis that there is no patentable subject matter in the specification.  Therefore…the successful grounds of opposition were substantial objections and costs should be awarded against the applicant without qualifications."

The applicant made the following submissions:

"1.       Only 3 of the opponent's particularised documents were pursued at the Hearing.  These 3 documents were selected from an original list of 14 documents relied upon, and which list was subsequently added to through an additional nine documents being raised in evidence in reply.  This placed a large burden on the applicant with regard to the preparation of evidence in answer and preparation for the Hearing, largely in relation to documents that were subsequently not relied upon at the Hearing.  The volume of evidence in answer required as a result is a matter of record, whilst the time spent by the attorney and barrister in consultation to prepare for the hearing included two full days in Canberra in addition to further time spent in review of prior art and preparation of prior art tables and the like.

2.        Only one of the opponent's declarants in evidence in support was determined to be a person skilled in the art in Australia.

3.        The opponent failed on 3 of the 5 grounds relied upon in the opposition.  The remaining two grounds on which the opponent was successful were only successful in as much as they were based on only one of the documents relied upon by them.

4. The applicant had a reasonable expectation that the single document on the basis of which the opponent was successful would be excluded from consideration under the provisions of s24(1) of the Patents Act.

We submit that in the above circumstances, in which it is evident that appropriate consideration of the relevant issues was not necessarily exercised by the opponent at important times, justify an award of costs against the opponent, at least in part.  In the alternative, the Delegate should, in our submission, decide that each party bear their own costs."

The power of the Commissioner to award costs is based on section 210 and regulation 22.8.

The applicant has raised an issue regarding the number of citations raised at the hearing.  They state that only 3 documents were pursued for the purposes of novelty and inventive step.  I shall have regard to the history of the filing of evidence to determine the facts in this matter.  After the evidence in support had been filed, the applicant (WMT) requested leave to amend the specification of patent application 663525 on 10 April 1997 and completed filing of its evidence in answer on 30 June 1997.  I note that the broadest claim as amended had a narrower scope than it had at acceptance.  In the circumstances I consider that the opponent may either raise new citations or reduce the number of citations it had previously raised.  The opponent is entitled to raise all citations it considers will challenge the validity of the opposed application if it were granted.

The issue of the declarant being a person skilled in the relevant art in Australia arises in the matter of determining common general knowledge, relating to inventive step. However sometimes the only experts in the art may be found overseas. The Patents Act does not prohibit parties to the opposition from providing evidence from skilled addressees overseas. Further I note that the overseas declarants were persons skilled in the relevant art, though not in Australia. The evidence of these declarants could have a bearing on novelty matters. I do not consider that use of overseas declarants, who are not skilled addressees in Australia, has a direct bearing on the award of costs.

The opponent was successful on the grounds of novelty and inventive step.  These are major grounds of invalidity.  Further I had stated in my decision, "In my view there is no patentable subject matter in the specification and I therefore refuse this application."  In view of my findings I do not consider that the lack of success of the opponent on the grounds of manner of manufacture and Section 40/Fair basis, provides any justification for a portion of the costs to be awarded against the opponent.

Both the applicant and opponent have reasonable expectations that cited documents would be either, not fatal or fatal to the validity of the opposed application.  However, I do not see how the expectations of the applicant or opponent as to how a certain document would be treated in the matter of novelty and inventive step would have a bearing on costs.

After due consideration of all relevant circumstances, I do not find any matter, which would justify award of costs in a manner other than costs following the event.  The opponent has been successful on two major grounds and I had determined that "there is no patentable subject matter in the specification."  Accordingly I award costs in accordance with Schedule 8 against the applicant Western Minerals Technology Pty Ltd and in favour of the opponent Western Mining Corporation Limited.

Jacob Elijah
Delegate of the Commissioner of Patents

Patent attorneys for the applicant   :  Wray & Associates, Perth

Patent attorneys for the opponent   :  Griffith Hack, Sydney